Auslandsabwicklungen

DESCRIPTION

Etiket Patent provides a full range of trademark services from clearance to licensing through prosecution and enforcement to help our clients manage and protect their valuable brands throughout the trademark life cycle, both domestically and internationally …

- Turkish Trademark System lays down the following issues;

- Registered trademark protection system for 10 years but can be extended by unlimited number of renewals,

- Protection of service marks,

- Protection of guarantee and collective marks,

- Registration after examination and opposition,

- Absolute and relative grounds for refusal,

- Exhaustion of the rights conferred by a registered trademark,

- Publication of applications and

- Opposition by third parties, and

- Trademark use requirement

LEGISLATION

Law 6769 on the protection of trademarks, which entered into force on January 10 2017, is the main legislation governing trademarks and includes a registered trademark protection system for goods and services, including guarantee marks and joint marks. Both good and services can be included in one application totally up to 45 classes, the last 11 of which are for services. Turkey is a party of

- Paris Convention on the protection of industrial property (1925)

- Nice Agreement concerning the international classification of goods and services for the purpose of registration of marks (01.01.1996)

- Vienna Agreement establishing an international classification of the figurative elements of marks (01.01.1996)

- Protocol relating to Madrid Agreement (01.01.1999)

APPLICATION STAGES

It is not required to file an evidence of use to the Turkish Patent Institute, however, a registered trademark should be used in Turkey within 5 years from the registration date to avoid any trademark cancellation action that may be initiated by other parties before the Turkish IP Court. The same is also valid where the use of the trademark is discontinued for an interrupted period of five years.

The period from filing to registration takes 5-8 months for a straight forward application. The Turkish Patent and Trademark Office examines all applications with respect to the filing requirements absolute grounds for refusal or over the eaRlier identical or confusingly similar trademark applications/registrations for the goods or services concerned within 1-4 months. In case of any inconvenience, the Office issues a notice of refusal and invites applicant to prepare a response in 2 months. If the Office’s decision is again negative and appealed by the applicant, then the Institute’s Appeal Board, namely Re-examination and Evaluation Board, examined it and issued a final decision within 4-8 months, which may be further appealed before the Turkish IP court in Ankara. In the affirmative, it will be published for the opposition of third parties for 2 months in Official Trademark Bulletin. Application will be registered within 2-3 months upon the payment of registration fee provided that no opposition is received.

COST OF A TRADEMARK REGISTRATION

In Etiket Patent, almost all trademark work is performed on a flat fee basis.

But it can change;

basically depends on the number of classes to be requested and

charging policy of the trademark attorney as well as any

opposition from third parties during publication and/or any official rejection during

official search-examination by the Turkish Patent Institute.

Please contact us to receive a cost estimate within 24 hours at most.

OPPOSITIONS

Any interested party may oppose a trademark application during the two months period of its publication. The Institute’s Appeal Board, namely Re-examination and Evaluation Board, is directly responsible for the opposition cases, issues an official letter to the applicant informing the opposition but decides by its own initiative within generally 4-8 months. Decision of the Appeal board is final and may only be appealed before the Turkish IP court in Ankara.

About WIPO trademark applications in Turkey; if any interested party may oppose a WIPO trademark application during the two months period of its publication, Turkish Patent and Trademark Office doesn't send a notification to WIPO. So it's not possible to learn for the applicant. At this point, Etiket Patent watchs the WIPO applications. If there is an opposition to WIPO trademark application, Etiket sends a notification to the applicant for defending against the opposition. There is a one month time to prepare a response file against the opposition.

ABOUT WIPO TRADEMARK APPLICATION REFUSALS IN TURKEY

The Turkish Patent Institute receives about 120.000 trademark applications per year and examines all on absolute grounds and also searches over identical or confusingly similar trademark applications and registrations for the goods or services concerned. It is no surprise that earlier ones have broader coverage and 20% of new applications are rejected ex-officio. Official rejections including provisional refusals can be appealed by the applicant first before the Institute and then before the specialized court. Where the applicant of the international registration receives a notification of refusal, he or she has the same rights and remedies as if the application has been filed directly in Turkey. In order to respond to such refusal, the following issues should be considered:

- Where the applicant of the international registration receives a notification of refusal, he or she has the same rights and remedies as if the application has been filed directly in Turkey. In order to respond to such refusal, the following issues should be considered:

- A response is due after two months from the date of receipt of the official notification from WIPO. This period cannot be extended.

- Additional submission is not allowed after filing the response. Therefore, it is strongly recommended that applicants be prepared for all arguments and necessary documents beforehand.

- A Turkish trademark attorney should be appointed.

- A letter of consent is not permissible in Turkey except for a few rare cases.

- If a rejection is based on likelihood of confusion in view of prior registrations, the earlier use argument cannot be accepted by the Institute, except for well-known trademarks.

- If a rejection is based on descriptive or generic nature, this may be overcome “may” be overcome if distinctive character, prior and frequent use of the trademark and international reputation are proved.

Although the grounds for rejection and correspondingly the response strategy may change depending on the nature of the application, it is important to file all arguments together with evidence during the response in full, including but not limited to trademark history, prior registered trademarks, reputation, products’ features and quality bearing, printed and interactive materials such as catalogues and advertisements, invoices or Customs clearances in Turkey, coverage with bids, agreements, contracts, awards/prizes, annual sales market share, if any (especially for Turkey).

Etiket Patent is an IP(intellectual property) firm for more than 9 years. We understand clients’ needs and expectations regarding expert counseling, fast response, clear communication and cost-effective quality trademark services. Should you require our professional service, please just contact us through info@etiketpatent.com